Federal Circuit Continues To Struggle With The Role Of The Specification In Construing Claims

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Despite the Federal Circuit's 2005 en banc decision in Phillips v. AWH Corp., district courts and the Federal Circuit continue to struggle with how to draw the line between using a patent's specification to properly interpret the claims and improperly importing limitations from the specification into the claims. A pair of recent Federal Circuit claim construction decisions illustrate this ongoing debate. In one case, the majority chose to narrow the scope of the claims using the specification. In the other, the majority appeared to rely on the specification to construe claims more broadly than a strict reading might suggest. But not all members of the panels were in agreement with either decision, as can be seen from the vigorous dissents filed.

Retractable Techs., Inc. v. Becton, Dickinson and Co., 653 F.3d 1296 (Fed. Cir. July 8, 2011)

In Retractable Techs., the patent at issue related to retractable syringes, which are medical syringes that feature a needle that retracts into the syringe body after the syringe is used. Judge Lourie, writing for the majority, reversed the district court's claim construction and found the term "body," as used in the patent, required a one-piece structure, rather than including multiple-piece structures. The majority opinion explained that "none of the [patent] claims expressly recite a body that contains multiple pieces." The majority looked at the specification and found that it distinguished "prior art syringes comprised of multiple pieces" while not disclosing a multiple-piece body as part of the claimed invention.

In dissent, Judge Rader opined that the majority had improperly imported limitations from the specification into the claims. Judge Rader reasoned that the ordinary and customary meaning of the term "body" "does not inherently contain a one-piece structural limitation," and "neither the claim language nor the written description evinces intent by the patentee to limit the scope of 'body' to one-piece bodies." Judge Rader also noted that two dependent claims expressly recited a one-piece body limitation, which suggested that the independent claim was not so limited under the doctrine of claim differentiation.

While joining the "thorough and well reasoned opinion" of Judge Lourie, Judge Plager wrote a short concurrence. Judge Plager noted, "[H]owever much desired by the claim drafters, who want claims that serve as business weapons and...